Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd

THE AMENDMENT APPLICATION 1 A general description of the nature of this proceeding can be found in my reasons in Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (1998) AIPC 91‑406 ("Wimmera"). The respondent ("RGC") has now applied for leave to amend pars 2A(1) and 10A(1) of its Further Amended Particulars of Grounds of Invalidity. Paragraph 2A as it now stands is in part as follows: "2. The alleged invention so far as claimed in each and every claim of the complete specification is not novel when compared with the prior art base as it existed before the priority date of each such claim. PARTICULARS Hereunder the Respondent/Cross‑Claimant will rely on common general knowledge in Australia before and at the said priority date and also upon the whole of each of the following instances of prior publication and prior user and/or prior art information. A. Matters occurring before 2 March 1990 (the date on which the provisional patent specification PJ 8919 was lodged) … (1) The use by the Respondent/Cross‑Claimant and its predecessors Associated Minerals Consolidated Limited and Western Titanium Limited, at their Capel B Plant from about 1980 onwards, such Plant being near Capel in Western Australia, and at their Narngulu C plant, near Geraldton in Western Australia from 1987 onwards, in the large scale commercial production and sale of synthetic rutile, of a process for upgrading the titania content of a titaniferous material, namely ilmenite, ("the prior process") which process comprised the steps of: (i) reducing the ilmenite using a solid carbonaceous reductant (namely coal or coal and recycled coal char) in a reduction kiln at temperatures in the reduction kiln ranging from about 920oC to about 1195oC, and both with, and without, the addition of sulphur, a sulphur containing compound or sodium chloride to the reduction kiln, to form metallic iron, a rutile phase or phases (including reduced rutile) and one or more of the separate impurity bearing titaniferous phases referred to in the specification and claim of the Petty Patent to produce a thermally reduced product …. …" Paragraph 10A(1) is in the same form. 2 The amendment sought will do three things. First, it will add another Plant at which the prior process was carried out. Second, it will alter the period in which the process was carried out at the Capel B Plant. If these two aspects of the amendment are made, the process will be alleged to have been carried out at RGC's: "Capel A Plant from: about May 1973 to about August 1975; about January 1980 to about September 1982; and about 1983 onwards; Capel B Plant from: about June 1974 to about December 1982; and about January 1984 onwards; such Capel Plants being near Capel in Western Australia. Narngulu Plant from 1987 onwards, such Plant being near Geraldton in Western Australia." 3 The third aspect of the amendment will affect the description of the first step in the prior process by adding after the opening words of par (i) - "reducing the ilmenite" - the following: "(with or without a preceding step of heating the ilmenite in an oxidising [atmosphere] at temperatures up to about 1000oC for a period of 3 to 4 hours to produce a pseudobrookite structure and rutile) …." 4 The application to amend is supported by an affidavit of Paul Zawa, RGC's then solicitor, which can be summarised as follows: (a) In early August 1998, pursuant to an order of the Court, RGC's solicitors provided the solicitors for the applicant ("WIM") with a list of samples on which RGC intended to rely in relation to the allegation of prior use in pars 2A and 10A of its further amended particulars of grounds of invalidity. By letter of 7 August WIM's solicitors pointed out that whereas the prior use cited in pars 2A and 10A is use at the Capel B Plant from 1980 onwards and use at the Narngulu C Plant from 1987 onwards, most of the twenty two samples were said to have come from the Capel A Plant and the rest from the Capel B Plant before 1980. The samples thus lay outside RGC's particulars. (b) In a letter of 2 October RGC's solicitors acknowledged the disparity between the samples and the particulars, and indicated their intention to apply for the amendment now sought. They expressed the view that the amendment should be uncontentious since "it does not add any matter of which your client was unaware from the prior art cited in the pleadings since 1994". They said that the amendments could be summarised as (a) adding in the Plant from which the samples originate; (b) extending the period of prior use back seven years; (c) accounting for periods in which RGC's kilns had been shut down, and (d) noting that an optional pre‑oxidation step may have taken place. They said that the pre‑oxidation step is cited "not only in most of the prior art relied upon since our client's original pleadings in 1994, but is also mentioned in your client's patent specification as an optional step". The letter concluded by observing that the amendment sought was "not an appropriate one to trigger a See v Scott‑Paine order". (c) Mr Zawa listed the thirty one patents and articles cited in RGC's particulars of 3 November 1994 and amended particulars of 20 February 1995 which refer to the addition of sodium chloride to the reduction kiln and to the oxidation of ilmenite prior to reduction. Some of the patents and articles refer to the addition of sodium chloride and the oxidation of ilmenite, others to one or the other of those steps. (d) Mr Zawa exhibited WIM's Petty Patent and Standard Patent, both of which refer to processes in which the ilmenite undergoes grain refinement by thermal oxidation followed by thermal reduction.